USPTO extends and expands peer review program for patent applications

The U.S. Patent and Trademark Office has announced an additional one-year pilot of its “Peer To Patent” pilot program, which invites public participation in the patent application process. The new program launches on October 25, 2010 and will be available through September 30, 2011.

The Peer-to-Patent program is a collaboration between the USPTO, the New York Law School, and others in which participating patent applications receive public scrutiny through comments and prior art submissions on the Peer-to-Patent website. The peer review period begins approximately one month after the patent application is published, and it lasts for three months. After the peer review period, the project sends the prior art and comments to the USPTO, and the USPTO advances the application earlier in its queue for examination. Both the USPTO and the applicant can consider the public comments and submitted prior art during the examination.

Applications that participate in the program can receive the benefit of quicker examination than they would have received if they had merely waited their ordinary turn at the USPTO. This is especially useful for technologies such as software and telecommunication inventions where the typical wait time to first Office Action often is several years. In addition, many commenters have suggested that the fact that a patent was peer reviewed patent could be useful in situations such as challenges to validity in litigation — in order words, the fact that a patent went through the program may make a jury less likely to find the patent invalid.

According to the USPTO, the Peer to Patent Program “opens the patent examination process to public participation in the belief that such participation accelerates the examination process and improves the quality of patents. Under the pilot program, inventors can opt to have their patent applications posted on the www.peertopatent.org website. . . . After the review period, the prior art is sent to the USPTO patent examiners for their consideration during examination.”

Changes in the new pilot include:

eligible technology classes have expanded to include software, telecommunications, and others;

peer review time is reduced to three months (from the previous four months);

up to 1,000 applications will be accepted into the program; and

peer reviewers may submit up to six items of prior art per application (down from the previous limit of 10).

The original Peer To Patent pilot ran from June 2007 until June 2009. The original pilot included 189 patent applications, and it received over 600 items of prior art from peer reviewers.

To participate in the program, a pending application must not have published more than 30 days before filing a consent form, and it must fall into an eligible technology class. Eligible classes include, among others:

2 responses to “USPTO extends and expands peer review program for patent applications”

It could be quite beneficial for patent examiners to receive prior art from this peer review program. My question, however, is whether they will actually review it. At least one recent study has indicated that patent examiners often disregard prior art submitted to them by applicants. If examiners similarly tend to ignore third-party prior art, I’m not certain how influential this program will ultimately be.

About IP Spotlight

IP Spotlight provides news and practice tips relating to the legal and business aspects of intellectual property and other intangible assets. Topics include licensing, due diligence, acquisition, compliance and risk management associated with patents, trademarks, copyrights and trade secrets. IP Spotlight is published by Jim Singer of Fox Rothschild LLP.

About the Author

Jim Singer is a partner with the law firm of Fox Rothschild LLP, where he focuses on intellectual property acquisition, protection, enforcement and licensing. For more details and contact information, select the "About the Author" link below.

Disclaimer

The individuals who maintain this blog work at Fox Rothschild LLP. The information, comments and links posted on this blog do not constitute legal advice. No attorney-client relationship has been or will be formed by any communication(s) to, from or with the blog and/or the blogger. For legal advice, contact an attorney at Fox Rothschild LLP or an attorney actively practicing in your jurisdiction. Do not send any confidential or privileged information to the blogger; neither Fox Rothschild nor the blogger will assume any liability or responsibility for it. If you send any information, documents or materials to the blog, you give permission for the blogger to include them on or in the blog. No information, documents or materials you send to the blog will be considered confidential or privileged by Fox Rothschild or its lawyers. Also, no such information, documents or materials will be returned to you. All decisions relating to the content belong to the blogger.